KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc.

Background

Two companies that sell permanent makeup both used the words “micro color” to describe their pigment products. One company registered “Micro Colors” with the Patent and Trademark Office and its registration became incontestable in 1999. The other company used the descriptive term on bottles and in a brochure and sued for a declaratory judgment after the registrant demanded it stop; the registrant counterclaimed for trademark infringement. The district court found the user was entitled to the statutory fair use defense and entered summary judgment, but the Ninth Circuit reversed, saying the user had to show its use would not likely confuse consumers.

Reasoning

The Court addressed whether a seller relying on the statutory fair use defense must prove its descriptive use will not cause consumer confusion. The Court held no such burden falls on the defendant; the plaintiff who sues for infringement must prove likelihood of consumer confusion as part of its case. The opinion explains that the statute places the confusion burden on the trademark holder and that “used fairly” does not itself impose a separate requirement to negate confusion. The Court also said some degree of consumer confusion can be compatible with fair use and that the extent of confusion may still be relevant to whether a use is fair.

Real world impact

This ruling means sellers can assert the descriptive fair use defense without having to prove there will be no consumer confusion. Trademark owners with strong registrations still must prove likely confusion to win. The case was vacated and sent back to lower courts to decide remaining factual questions under the correct legal rule.